ON THE JURISDICTION OVER CASES INVOLVING A FOREIGN ELEMENT IN DISPUTES CONCERNING COMPENSATION FOR DAMAGES CAUSED BY INFRINGEMENT OF INTELLECTUAL PROPERTY RIGHTS IN THE DIGITAL ENVIRONMENT

Abstract

The article addresses the issue of determining jurisdiction in cases concerning infringements of intellectual 
property rights in the digital environment involving multiple defendants located in different jurisdictions. 
The author starts from the premise that there is a significant number of online infringements of intellectual 
property rights in Ukraine and the European Union, which is linked to the cross-border nature of digital networks 
and the absence of territorial borders in virtual space. It is emphasized that the multiplicity of defendants and 
the dispersal of their activities across different states lead to fragmentation of claims, the need for parallel 
proceedings, and the risk of inconsistent judgments, which contradicts the principle of legal certainty.
The paper analyses the provisions of the Law of Ukraine “On Private International Law” concerning 
the general and special grounds of jurisdiction in cases with a foreign element, as well as the grounds 
of exclusive jurisdiction in cases relating to the registration of intellectual property rights. It separately 
notes the categories of cases that are excluded from the scope of application of the Convention on Choice 
of Court Agreements and the Convention on the Recognition and Enforcement of Foreign Judgments in Civil 
or Commercial Matters, which significantly narrows the possibilities for contractual regulation of jurisdiction in 
disputes concerning intellectual property rights. The approaches of Ukrainian legislation and Regulation (EU) 
No. 1215/2012 (Brussels I bis) to the determination of jurisdiction are compared, in particular the special heads 
of jurisdiction in matters relating to non-contractual obligations and the mechanisms for avoiding the adoption 
of irreconcilable judicial decisions.
Considerable attention is devoted to the analysis of soft-law international instruments – the ALI Principles, 
the CLIP Principles and the Kyoto Guidelines of the International Law Association – which propose models 
for the consolidation of claims against multiple defendants in disputes concerning infringements of intellectual 
property rights and criteria of a close connection between claims as a condition for such consolidation. 
On the basis of a comparative legal analysis, the conclusion is drawn as to the expediency of implementing 
into domestic legislation provisions similar to Article 8 (1) of the Brussels I bis Regulation, which would allow 
Ukrainian courts to hear consolidated claims against multiple defendants, including foreign ones, without 
the need for multiple court proceedings in different states. In the author’s view, such amendments would 
promote the harmonisation of Ukrainian law with EU law and enhance the effectiveness of the protection 
of intellectual property rights in the digital environment.